Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/23/2026 has been entered. Claims 1-3, 6-14 and 17-21 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7, 11, 18 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 7, there is not proper support in the specification or drawings for the writing section being removable from the package (as defined in claim 7) and also permanently integrated into the packaging film such that the writing section cannot be removed without the use of scissors, a knife, or other cutting utensil (as defined in claim 1). There does not appear to be support for a single embodiment which is both removable and permanently integrated into the packaging film. Examiner suggests canceling claim 7 or amending claim 1 to delete the limitation defining the writing section as being permanent.
Regarding claim 11, there is not proper support in the specification or drawings for the writing section including a line of weakness allowing it to be removed from the package (as defined in claim 11) and also permanently integrated into the packaging film such that the writing section cannot be removed without the use of scissors, a knife, or other cutting utensil (as defined in claim 1). There does not appear to be support for a single embodiment which is both removable by a line of weakness and permanently integrated into the packaging film. Examiner suggests canceling claim 11 or amending claim 1 to delete the limitation defining the writing section as being permanent.
Regarding claim 18, there is not proper support in the specification or drawings for the writing section being removable from the package (as defined in claim 18) and also permanently integrated into the packaging film such that the writing section cannot be removed without the use of scissors, a knife, or other cutting utensil (as defined in claim 1). There does not appear to be support for a single embodiment which is both removable and permanently integrated into the packaging film. Examiner suggests canceling claim 18 or amending claim 1 to delete the limitation defining the writing section as being permanent.
Regarding claim 20, there is not proper support in the specification or drawings for the writing section including a line of weakness allowing it to be removed from the package (as defined in claim 20) and also permanently integrated into the packaging film such that the writing section cannot be removed without the use of scissors, a knife, or other cutting utensil (as defined in claim 1). There does not appear to be support for a single embodiment which is both removable by a line of weakness and permanently integrated into the packaging film. Examiner suggests canceling claim 20 or amending claim 1 to delete the limitation defining the writing section as being permanent.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 11, 18 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 is rendered indefinite by the phrase “wherein the writing section is removable from the package” since it is unclear how the writing section can be removable if claim 1 previously defined the writing section as being “permanently integrated into the packaging film such that the writing section cannot be removed without the use of scissors, a knife, or other cutting utensil”. For examination purposes, Examiner interprets the writing section as being removable from the package.
Claim 11 is rendered indefinite by the phrase “the writing section includes a line of weakness around a perimeter of the writing section, allowing it to be removed from the remainder of the package” since it is unclear how the writing section can be removable if claim 1 previously defined the writing section as being “permanently integrated into the packaging film such that the writing section cannot be removed without the use of scissors, a knife, or other cutting utensil”. For examination purposes, Examiner interprets the writing section as being removable from the package by a line of weakness.
Claim 18 is rendered indefinite by the phrase “wherein the writing section is removable from the package” since it is unclear how the writing section can be removable if claim 1 previously defined the writing section as being “permanently integrated into the packaging film such that the writing section cannot be removed without the use of scissors, a knife, or other cutting utensil”. For examination purposes, Examiner interprets the writing section as being removable from the package.
Claim 20 is rendered indefinite by the phrase “the writing section includes a line of weakness around a perimeter of the writing section, allowing it to be removed from the remainder of the package” since it is unclear how the writing section can be removable if claim 1 previously defined the writing section as being “permanently integrated into the packaging film such that the writing section cannot be removed without the use of scissors, a knife, or other cutting utensil”. For examination purposes, Examiner interprets the writing section as being removable from the package by a line of weakness.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 8-9, 12, 14, 17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Legnaioli (US 2,868,363) in view of Moore (US 8,603,278).
Regarding claim 1, Legnaioli discloses a package (wrapper 20 in Fig. 1) comprising: a front face and an opposed rear face each constructed from a packaging film that forms an exterior (outer facing side of 20) of the package and that defines an interior (inner facing side of 20) configures to house one or more packaged products (element 12 is considered a packaged product since products 18 are packaged within element 12); wherein the packaging film includes two regions: a writing section (area at 39, which is within 40) configured as a portion of the packaging film used to construct the package and positioned on a face (front face shown in Fig. 1) of the package; a remainder section (portion of 20 that surrounds 40) surrounding the writing section and constructed from polymeric material (cellophane – See column 2, lines 30-31), wherein the writing section is permanently integrated into the packaging film such that the writing section cannot be removed without the use of scissors, a knife, or other cutting utensil; wherein the writing section is a material region distinct from the remainder section (as shown in Fig. 1) and is configured to allow a user to write or draw within the writing section and directly on the package (See column 3, lines 30-34). Legnaioli discloses the claimed invention except for the express disclosure of the specific material of the writing section.
However, Moore teaches it is well known in the art for a writing section (104) of a container film (102) to be formed from a writable paper material. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the writing section of Legnaioli to be formed from a paper material in order to allow for convenient writing by the user. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 3, Legnaioli discloses the package is configured as a pouch.
Regarding claim 8, Legnaioli discloses the writing section has length, width, or both of about 1-25 inches (based on the standard size of cigarette packages).
Regarding claim 9, Legnaioli discloses the claimed invention except for the express disclosure of the plurality of writing sections. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the package of Legnaioli-Moore to have a plurality of writing sections in order to allow for more surface area for writing by the user. It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim 12 is directed toward the obvious method of using the device of Legnaioli-Moore including the steps of writing a desired message within the writing section of the package of writing a desired message within the writing section of the package of delivering the package to an intended user, thereby providing a customized message to the intended user on the package.
Regarding claim 14, Legnaioli discloses the package is configured as a pouch.
Regarding claim 17, Legnaioli discloses the writing is done with a pencil (at 24).
Regarding claim 21, Legnaioli discloses the packaging film (20) comprises a single layer of film.
Claims 2, 6, 7, 10-11, 13 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Legnaioli (US 2,868,363) in view of Moore (US 8,603,278) as applied to claims 1 and 12 above, and further in view of Knoerzer et al. (US 7,686,513).
Regarding claims 2 and 13, Legnaioli-Moore discloses the claimed invention except for the aperture that extends into the package interior with an additional writing section adhered over the aperture. However, Knoerzer teaches a package (at 50 in Fig. 4) comprising an aperture (aperture formed at 60 when 70 is removed) that extends into the package interior (the interior of the package can be considered any portion within the outer layer of the package) with an additional section (printed section at 70) adhered over the aperture, for the purpose of allowing the user to remove the additional section for promotional use aside from the package. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the package of Legnaioli-Moore with an additional section as taught by Knoerzer in order to provide the user with an additional removable section for promotional use. Furthermore, the additional section is fully capable of being written on.
Regarding claim 6, Legnaioli-Moore discloses the claimed invention except for the specifics of the package. However, Knoerzer teaches it is well known in the art to form a package from food safe material for the purpose of preserving shelf life of the contents (column 8, lines 47-58). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the package of Legnaioli-Moore to be made from food safe material as taught by Knoerzer in order to increase the shelf life of the contents.
Regarding claims 7, 11, 18 and 20, Legnaioli-Moore discloses the claimed invention except for the writing section being removable. However, Knoerzer teaches a package (at 50 in Fig. 4) comprising a promotional section (at 70) being removable from the package along lines of weakness (at 60) extending the thickness of the packaging film (at 50), creating an opening in the package that extends into the package interior (the interior of the package can be considered any portion within the outer layer of the package) after the section has been removed, for the purpose of allowing the user to remove the section for promotional use aside from the package. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the writing section of Legnaioli-Moore to be removable as taught by Knoerzer in order to provide the user with a removable section for promotional use aside from the package. Furthermore, any portion of the package of Legnaioli beneath the packaging film 20 is considered the package interior.
Regarding claims 10 and 19, Legnaioli-Moore discloses the claimed invention except for the removable covering. However, Knoerzer teaches a package (at 50 in Fig. 4) comprising a promotional section (at 70) being removable from the package, overlying a section (80) of the package, for the purpose of allowing the user to remove the section for promotional use aside from the package. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the writing section of Legnaioli-Moore to have a removable covering thereover as taught by Knoerzer in order to provide the user with a removable section for promotional use aside from the package.
Response to Arguments
Applicant's arguments filed 1/23/2026 have been fully considered but they are not persuasive.
Applicant argues that amended independent claim 1 recites a package in which the writing section is configured as a portion of the packaging film used to construct the package, is constructed from paper-based materials, and is permanently attached to the package such that it cannot be removed without the use of scissors, a knife, or other cutting utensil. Applicant respectfully submits that the noted limitations are not taught or suggested by the cited combination.
Contrary to Applicant’s argument, as described above, Legnaioli-Moore discloses a package (package at 20 in Legnaioli) in which the writing section (at 39/40 in Legnaioli) is configured as a portion of the packaging film used to construct the package (the writing section 39 is considered to be a portion of the film since it part of the surface of the package 20), is constructed from paper-based materials (as taught by Moore), and is permanently attached to the package such that it cannot be removed without the use of scissors, a knife, or other cutting utensil.
Applicant argues that the Patent Office asserts that the writing section of Legnaioli is identified as element 39, positioned on the outer cigarette container wrapper (please see Office Action, page 3, first paragraph). Applicant notes that the writable area (element 39) in Legnaioli is created by treating the surface of that transparent wrapper (e.g., by mechanically or chemically roughening the wrapper surface or by applying inks or dyes to the wrapper surface) so that it can receive pencil markings. The writable area in Legnaioli is therefore a surface modification of the outer cigarette wrapper material, not the actual cigarette package itself that houses the packaged product (e.g., the cigarettes). Stated another way, the wrapper of Legnaioli does not constitute a writing section formed as a portion of the packaging film used to construct the package itself. In Legnaioli, the wrapper remains a single, uniform film, and the writing functionality is achieved only by surface treatment rather than by forming a distinct writing section as part of the packaging film.
Regarding Applicant’s argument, even though the writing section (at 39) of Legnaioli is created by treating the surface of the packaging film (20), it can still be considered to be “configured as a portion of the packaging film since the writing section (at 39) is integrally formed with the front surface of the packaging film (20). The term “configured as a portion of” is relatively broad and can encompass two elements that are integrally formed with one another”. With respect to the art rejections, in accordance with MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 70 USPQ2D 1827, 1834 (Fed. Cir. 2004).
Applicant argues that amended claim 1 recites that the writing section is constructed from paper, cardboard, fiberboard, carton board, chalk board, white board, or combinations thereof. In contrast, Legnaioli relies exclusively on transparent film materials such as cellophane and teaches altering the surface properties of those materials to permit writing. There is no disclosure in Legnaioli of replacing or forming a portion of the packaging film itself from a paper-based writing substrate.
Regarding Applicant’s argument, as described above, the rejection uses the Moore reference for its teaching of forming a writing section of a packaging film from paper material. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that amended claim 1 also requires that the writing section is permanently attached to the package and cannot be removed without the use of scissors, a knife, or other cutting utensil. Legnaioli does not disclose a writing section that is permanently attached in this manner. As noted above, the writable area in Legnaioli is part of a removable wrapper, and the reference contemplates that the wrapper may be removed from the package during normal use. Legnaioli does not disclose a writing section that remains permanently attached to the package throughout its useful life or that requires cutting tools for removal.
Regarding Applicant’s argument, as described in the rejection above, element 20 in Legnaioli is interpreted as the package, wherein the writing section 39 is permanently attached to the package and cannot be removed without the use of scissors, a knife, or other cutting utensil.
Applicant argues that Applicant further submits that Moore does not make up for the noted deficiencies of Legnaioli. Instead, Moore is directed entirely to container labels that are manufactured separately from a container and later applied to the exterior of the container. The writable area in Moore is formed on a label substrate by embossing, texturing, or applying a writable surface layer, after which the completed label is affixed to the container. Moore expressly distinguishes between the container and the label, treating the label as an accessory applied to a finished container rather than as a structural component used to construct the container itself. In contrast, amended claim 1 requires that the packaging film forms the package itself, including the front face, rear face, exterior, and interior that houses the packaged products. Further, the writing section is not merely attached to the exterior of a finished container but instead is configured as a portion of the packaging film used to construct the package. As described above, Moore does not disclose a writing section that is part of the packaging film that defines the package wall or interior, nor does Moore disclose a writing section that participates in forming the package structure.
Regarding Applicant’s argument, as described in the rejection above, the Legnaioli reference was used for its disclosure of the package and writing section except for the specific material of the writing section. Moore is merely used for its teaching that it is well known in the art to provide a writing section of a packaging film from paper material. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that Knoerzer is directed to multi-layer flexible packages incorporating a removable portion defined by a cut and held by releasable adherence such that the portion can be removed by peeling while maintaining barrier properties. The core teaching of Knoerzer is therefore an engineered removable piece designed for consumer removal, typically by peeling, with adherence intentionally configured to facilitate the removal. Applicant notes that amended claim 1 requires that the writing section is permanently attached as part of the package and cannot be removed without the use of scissors, a knife, or other cutting utensil. Even if Knoerzer is cited for the general concept of a section in a film layer, it teaches removability by releasable adherence rather than the claimed non-removability absent cutting tools, and it does not teach a paper-based writing section configured as a portion of the packaging film used to construct the package.
Regarding Applicant’s argument, Examiner notes that the Knoerzer reference was not used in the rejection of claim 1. Furthermore, Examiner points to the 112(a) and 112(b) rejections above which question the feasibility of a writing section being both permanently integrated such that it cannot be removed from the packaging film and being removable from the packaging film. The Legnaioli reference discloses the writing section being permanently integrated such that it cannot be removed from the packaging film. While the Knoerzer reference teaches the concept of a removable writing section.
With respect to the art rejections, in accordance with MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 70 USPQ2D 1827, 1834 (Fed. Cir. 2004).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN A REYNOLDS whose telephone number is (571)272-9959. The examiner can normally be reached M-F 9am-5pm.
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/STEVEN A. REYNOLDS/Primary Examiner, Art Unit 3735